Prof Dr Ansgar Ohly - GRUR · Studios v Grokster, 545 US 913) and in tension with recital 27...

Prof Dr Ansgar Ohly

Chair of Private Law, Intellectual Property and Competition Law

The right of communication to the public: a critical analysis in eight steps

GRUR meets Brussels Workshop 2017

Brussels, 12 June 2017

A quick and confusing succession ofjudgments

Svensson (C-466/12,

2014)

BestWater(C-348/13,

2014)

GS Media (C-160/15,

2016)

Filmspeler(C-527/15,

2017)

Ziggo [PirateBay] (C-610/15, (14/06/2017)

AKM v Zürs.net (C-

138/16, 2017)

RehaTraining(C-117/15,

2016)

SBS Belgium(C-325/14,

2015)

Soc. Portugesade Autores (C-151/15, 2015)

C-More Enter-tainment (C-

279/13, 2015)

OSA v Léčebnélázně (C-

351/12, 2014)

today

More to come, eg BGH, ref of23/02/2017 –

Córdoba

Outline

8 theses /propositions

The present state (1-5) Reform (6-8)

CJEU approach in general

(1-3)

Primary/ secondary

liability (4)

Art 13 draft DSM

Dir (6)

Judicial law-

making (5)

A three-layer

approach (7)

Liability of inter-media-ries (8)

1. Between formalism and a multi-factor test

1. The CJEU’s approach to communication to the public hovers between a formalist approach and a more substantive, multi-

factor test.

Formalism (eg Svensson, OSA)

(1) Communication (to beconstrued broadly) = affordingusers access to the work

(2) To the public

(a) indeterminate, fairly large

number of people

(b) New public or new technical

means

Multi-factor test (eg Del Corso, GS Media)

• Essential role of the user

• Flexible “tool-box” of substantive criteria, such as

- intention to make a profit / of

offering a service in order to

receive a benefit

- receptiveness of user

- subjective factors, esp. full

knowledge of consequences of

own act (including knowledge of

the law?)

- duties of care

1. Between formalism and a multi-factor test

2. The formalist approach

2. The formalist approach may lead to inadequate consequences. It is the result of premature generalisation from specific rationes

decidendi.


The formalist test seems clear and easy, but…

• … the broad concept of communication blurs the line between primary and

secondary liability

– link does not make available, but only facilitates discovery (AG Wathelet in GS

Media)

– “affording users access“ without regard to intervening actions by others

includes liability of intermediaries

• … “new public” can be one factor, but it is not always the crucial one

– When the work is made available to a new public, the right owner should

normally participate (example: the TV set in the bar, see WIPO Guide to BC)

– But the reverse is not true, as the making available right is not subject to

exhaustion (and shouldn’t be)

– Example: BGH GRUR 2017, 514 – Córdoba (W v Nordrhein-Westfalen, reference

to CJEU of 23/02/2017)


The dilemma in GS Media: “new public” in case of link to work posted w/o right owner’s consent?

No (AG Wathelet) → no liability even in case of

intention → “exhaustion” even without the right

owner’s consent

Yes (BGH GRUR 2016, 171 –Die Realität II = follow-up to BestWater) → strict liability even for private linking → severe interference with

freedom of internet


Svensson: a methodological critique

Distinguishing orapplication by

analogy?

CJEU – SGAE v Rafael Hoteles

CJEU – Svensson

3. The multi-factor test

3. The multi-factor test allows for adequate solutions, but it may result in legal uncertainty and ad-hoc law-making. In this

scenario, bad cases make particularly bad law.


GS Media: a polemical critique (1)

• The GS Media rule:

– Link not posted for profit → liability in case of actual or constructive

knowledge

– Link posted for profit → knowledge presumed, presumption can be rebutted

by showing that “necessary checks” have been made

• R & A Rules of Golf, Rule 1-4: “If any point in dispute is not covered by the

Rules, the decision should be made in accordance with equity.”

• Uncertainty, because:

– Nobody could have expected this.

– How to distinguish non-profit and for-profit linking?

– What are the “necessary checks”? Do they only relate to licences or also to

other legal issues (eg application of exceptions)?


GS Media: a polemical critique (2)

• The GS Media rule leads to a fair result for non-profit links → notice and

take down as the basic principle of intermediary liability

• But it goes much too far for links on commercial websites

– No factual basis for presumption of knowledge

– Imagine the application to a search engine! See also AG Szpunar in Pirate Bay

• Could be the starting-point for a duty of care approach (see presentation

Professor Nordemann), but the onus should be on the claimant

• Bad cases make bad law!

4. Primary and secondary liability

4. Due to the broad interpretation of the term “communication” the line between primary and secondary liability has become blurred. This approach may lead to inconsistencies with other intellectual property rights, with Art 8 (3) InfoSocDir and with

national doctrines of secondary liability.


Primary infringement(eg upload)

National doctrines of intermediary liability

(eg inducement / authorisation or Störerhaftung)

Providing means toinfringe

Primary infringer

Right owner

Intermediary


But this disctinction has become blurred:

• No distinction between primary and secondary liability in cases of linking and

framing (Svensson, GS Media), contrary to earlier national cases (BGH GRUR

2003, 958 – Paperboy)

• Making content “one’s own” (“Zueigenmachen”) is probably not a relevant

factor (BestWater), contrary to German practice (BGH GRUR 2014, 706 –

marions-kochbuch.de)

• Providing a device which enables infringement and pointing out this possibility

in advertising is a primary infringement (Filmspeler), contrary to most national

laws (House of Lords, CBS v Amstrad, [1988] AC 1013, US Supreme Court, MGM

Studios v Grokster, 545 US 913) and in tension with recital 27 InfoSoc Dir

• Platform operators may be liable for primary infringement (recital (38) draft

DSM directive, AG Szpunar in Ziggo [TPB]), contrary to cases like Grokster and

German case-law in YouTube cases


A methodological critique

• The CJEU does not discuss the point openly (but see AG Szpunar in Ziggo),

although this is a fundamental doctrinal and policy issue.

• Nor does the court take note of the prior national experience.

– Not all of it may be sound (I personally do not like the German rule in marions-

kochbuch.de).

– But it should be persuasive authority: Discuss it and reject it if you have better

arguments!


Why distinguish?

• A primary infringer who uses the work herself / himself is liable whenever

(s)he does one of the acts exclusively allocated to the right owner.

• Whereas secondary liability requires additional criteria of imputation.

– Example 1: mainly subjective criteria under common law doctrines of

inducement / authorisation in Grokster and in CBS v Amstrad (see P Davis,

Accessory Liability)

– Example 2: duties of care under the German doctrine of Störerhaftung

(interferer‘s liability)

– GS Media mentions some of these criteria, but the distinction from primary

liability is lacking

• Secondary liability is closely connected to national tort law doctrine.

– Subjective elements of liability for incitement and assistance

– Duty of care concepts


And in Europe?

Art 3 InfoSoc

Art 8 (3) InfoSoc

Art 3 InfoSoc

Art 8 (3) InfoSocor

Secondaryliability


An autonomous, judge-made concept of secondary liability?

• Opinion AG Szpunar in C-610/15, Ziggo/Pirate Bay at para 3:

“The European Commission, whose opinion appears to me to be shared by the United Kingdom of Great Britain and Northern Ireland, contends that liability for sites of this type is a matter of copyright application, which can be resolved not at the level of EU law but under the domestic legal systems of the Member States. Such an approach would, however, mean that liability, and ultimately the scope of the copyright holders’ rights, would depend on the very divergent solutions adopted under the different national legal systems. That would undermine the objective of EU legislation in the relatively abundant field of copyright, which is precisely to harmonise the scope of the rights enjoyed by authors and other rightholders within the single market. That is why the answer to the problems raised in the present case must, in my view, be sought rather in EU law.”


An autonomous, judge-made concept of secondary liability?

• Opinion AG Szpunar in C-610/15, Ziggo/Pirate Bay at para 3: autonomous

concept

• Objection 1: Recital 59 (5) InfoSoc Dir leaves the conditions and modalities

for injunctions against intermediaries to the Member States

• Objection 2: risk of conflicts with national / European tort law doctrines

• Objection 3: the CJEU distinguishes between “own use“ and the liability of

intermediaries in trade mark law (C-236 – C-238/08, Google France, C-

324/09, L‘Oréal v eBay)

• Objection 4: criteria of imputation (objective duty of care? Subjective

criteria such as knowledge) should be discussed openly

5. Judicial law-making

5. In the area of economic rights, the law is no longer made in Brussels, but in Luxemburg. But the preliminary reference

procedure is not a good basis for judicial law-making.

5. Judicial law-making

Judicial law-making and its drawbacks

• Recent directives have left the central issues of © law untouched.

• Contours of economic rights and distinction primary/secondary liability

have exclusively been dealt with by the CJEU.

• Problems of the preliminary reference procedure:

– selection of cases and presentation of facts by national courts

– in particular lack facts clarifying the economic background

– restriction to abstract questions of law

– superficial way of dealing with precedent

– national experiences only taken into account haphazardly

6. Legislation should reclaim the lead. Article 13 of the draft DSM Directive is a rather weak attempt at doing so.

Art 13 (1) Draft Directive on Copyright in the Digital Single Market

Information society service providers that store and provide to the public access

to large amounts of works or other subject-matter uploaded by their users shall,

in cooperation with rightholders, take measures to ensure the functioning of

agreements concluded with rightholders for the use of their works or other

subject-matter or to prevent the availability on their services of works or other

subject-matter identified by rightholders through the cooperation with the

service providers. Those measures, such as the use of effective content

recognition technologies, shall be appropriate and proportionate.(…)

6. Legislation should take the lead

Art 13 draft DSM Directive: a (very brief) critical appraisal

• Assumes that ISPs regularly performing acts of communication to the

public (recital 38) without modifying Art 3 InfoSoc Dir

• Requirement 1: ISPs should take measures to ensure the functioning of

agreements → no incentive to reach these agreements in the first place,

enforcement of agreements is probably a contractual duty anyway

• Requirement 2: ISPs should prevent availability of works identified by

right-holders → if infringing, this duty exists under Arts 3; 8 (3) InfoSc Dir

anyway

• Directive (almost) does not affect other directives, in particular InfoSoc →

But this would be essential for a coherent legal regime

7. A three-layer approach

7. The way forward could be a three-layer approach, consisting of a “black list” of clear infringement cases, more general

categories of market-sensitive provisions and a general clause of communication to the public.

7. A three-layer approach

Layer 1

• A Black List of core infringements

• Eg making available a work online by uploading in the course oftrade

Layer 2

• Flexible provisions with market effect clauses

• Eg integrating a work into one‘s own website by means of framing, provided it has a negative effect or results in an undue advantage

Layer 3

• A general clause

• The present Art 3 plus elements 2 and 3 of the three-step test


8. It should be accompanied by a clear distinction between primary liability (liability for own uses of protected subject-

matter), secondary liability (liability for a violation of duties of care in cases of indirect infringement) and a duty for innocent

parties to assist in order to stop infringement.


3 types of responsibility

Primary liabilityliability for own use of

work = liability forperforming the acts

allocated to the rightowner (eg upload) →

full liability

Secondary liabilityliability for enabling others

to infringe → should requirethe violation of a duty of

care which may varydepending on typical

situations and indivicualcircumstances →

injunctions, restrictedliability for damages

Duty to assistEven without violationof duty: accountable, not liable (Husovec) =

the present Art 8 (3) → duty to take down, but cost of measure should

regularly be paid byright owner

Conclusion

This is a Herculean task. Scratching the surface is not enough. But EU legislation

should muster the power totackle it.

Photo: Marie-Lan Nguyen, Wikimedia commons

Merci beaucoup de votre attention! Hartelijk danken voor uw andacht!

Date post:	07-Aug-2019
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Prof Dr Ansgar Ohly - GRUR · Studios v Grokster, 545 US 913) and in tension with recital 27...

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